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The Board once again applied the Morton-Norwich factors in determining functionality:

(1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
(2) advertising by the applicant that touts the utilitarian advantages of the design;
(3) facts pertaining to the availability of alternative designs; and
(4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

Patents: The Board reviewed several relevant utility and design patents owned by applicant, noting that a design patent "may be some evidence of non-functionality," but may be "outweighed by other evidence supporting a functionality determination."

Here, the product’s form is dictated by its function. If we compare the operating instructions for Applicant’s subject hot air corn popper (shown below, on the left),with one of the embodiments of Applicant’s ‘974 utility patent ... we see how the popper’s utilitarian features dictate its design.

The Board concluded that the applied-for mark merely "combines the popper’s fundamentally functional features with minor variations that do not detract from—and may even add to—its overall functionality." The translucent cover deflects the popped popcorn into the bowl, and allows the user to watch the corn as it pops. The widening discharge chute "reduces the risk that popped corn would jam as it is discharged from the popper." The generally cylindrical base with a skirt on the bottom, increases the popper's stability.

In sum, the applied-for design, "even with its insignificant variations, is, taken as a whole, functional."

Advertising: Applicant's advertising states that the "chute directs popcorn right into your bowl," confirming the functional purpose of the chute and its shape.

Alternative Designs: Applicant maintained that there are numerous functionally-equivalent designs that look different (See below).

The Board, however, found that these four competitors' designs "all follow the same functional pattern—directing a stream of hot air upward, carrying popped kernels of corn up to a transparent or translucent cover that redirects them to a waiting receptacle. Their commonalities, which are covered by the drawing and description of Applicant’s proposed mark, outweigh their differences."

Even thought applicant's utility patent has expired, applicant could, if granted a trademark registration for this design, claim an exclusive right potentially in perpetuity, which would constitute a hindrance to competition.

Many functionally equivalent designs, which necessarily would share many of the functional features of Applicant’s design, would at least arguably resemble Applicant’s design to some extent. Competitors "would not know if the features which they are using in their products, whose overall configurations are not dissimilar from that of the applicant, subject them to a suit for trademark infringement."

Cost and Ease of Manufacture:The fourth Morton-Norwich factor (lesser cost or ease of manufacture) was neutral.

Taking the evidence as a whole, the Board found the applied-for design to be functional, and so it affirmed the Section 2(e)(5) refusal.

Acquired Distinctiveness: Turning to the alternative refusal, the Board pointed out that under Wal-Mart, a product configuration cannot be inherently distinctive for purposes of trademark registration. An applicant who seeks to register a product design via Section 2(f) faces a "heavy burden."

Applicant's use of the proposed mark for more than thirteen years was alone insufficient to establish acquired distinctiveness. Moreover, the probative value of long use is "vitiated" where the use is not substantially exclusive.

Applicant complained that one of the competitive designs cited by Examining Attorney Curtis W. French is a knock-off of its design, but "[c]opying is only evidence of secondary meaning if the defendant's intent in copying is to confuse consumers and pass off his product as the plaintiff's." In any case, “it is more common that competitors copy product designs for desirable qualities or features."

Applicant pointed to is more than $77 million in sales, but the Board observed that sales figures merely demonstrate the popularity of the product; they do not show that the consuming public recognizes the product shape as a source indicator. Applicant also pointed to 6 million dollars in advertising expenditures, but nothing in the advertisements promoted the configuration of the product as an indicator of source.

At bottom, the critical question is not the length of Applicant’s use, the dollar amount of its sales, or the extent of its advertising; it is the effectiveness of these efforts in “creating a consumer association between the product configuration and the producer.” In re Ennco Display Systems, 56 USPQ2d at 1285. The record in this case does not reveal that the claimed product features have acquired distinctiveness under Section 2(f) of the Trademark Act.

And so the Board affirmed the alternative refusal of non-distinctiveness.

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